Parallel trade of products protected by intellectual property, in particular patents, has been a long-standing and unresolved issue in intellectual property law. International trade in original goods put lawfully on a market abroad and imported at lower prices to the benefit of consumers has been considered detrimental to intellectual property. Despite an overall commitment to open market and free trade, parallel trade is met with persistent resistance and often called grey imports, suggesting unlawfulness, or at least illegitimate trade impairing monopoly rights and rents. It challenges the tradition of nationally defined and protected intellectual property rights.
With the advent of the trips Agreement and the incorporation of intellectual property standards and enforcement in the multilateral trading system of the World Trade Organization and in bilateral or plurilateral agreements, the problem of parallel trading was linked to the broader agenda and framework of international trade and the principles of wto law. The present thesis explores the wider implications of provisions of the trips Agreement beyond Article 6 and includes a detail assessment of the implications of gatt and the gats Agreements. It links the problem not only to international trade regulation but also to regional trade agreements, in particular EU law, and disciplines of competition law and policy.
Since parallel trade goods relates to the geographical origin of the product, and not the nationality of the right holder, restrictions are subject to national treatment and the ban on quantitative restrictions, exceptions from which required detailed justification under Article xx gatt and Article xiv gats. They have to meet the necessity test and thus call for the least restrictive manner in pursuit of a public policy goal. The thesis draws attention to this wider regulatory field and takes issue with the widespread opinion among intellectual property lawyers that Article 6 trips exhaustively deals with the matter and leaves it to full discretion of Members of the wto.
The thesis concludes that the doctrine of international exhaustion offers a convincing answer within the multilateral trading system, and that the doctrines both of national and regional exhaustion do not stand the legal test of international trade regulation. In light of persistent and long-standing insistence on national exhaustion and the territoriality of intellectual property rights in the patent field by industries affected, this is a challenging, but well-founded and well-argued proposition. The thesis succeeds to support the proposition with a multitude of legal and policy arguments. It doing so, it offers the
Accompanying Dr Santanu Mukherjee over many years in the pursuit of his research has been most rewarding. The thesis was developed by the author next to a busy professional life as a practising lawyer in India, and upon completing the mile programme at the World Trade Institute, University of Bern, Switzerland. Despite a busy schedule, he persistently pursued his academic work and sets and example to all those in comparable circumstances. I am particularly glad and happy to see this volume added to the World Trade Institute Advanced Series.
Thomas Cottier
Bern, September 2022